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FORMER DECISIONS OVERRULED. See Trade-Marks, 100.

FORMER SUIT. See Suits for Infringement, 2.

FRAUD. See Interference, 4, 15; Trade-Marks, 16, 102.

FUNCTION. See Claims, 6; Construction of Claims; Invention, 4, 6; Patentability, 1; Reissues, 3; Rejection of Claims, 1.

GENERIC TERMS. See Trade-Marks, 26, 81.

GEOGRAPHICAL MARK. See Trade-Marks, 70, 71.

GEOGRAPHICAL TERMS.

See Trade-Marks, 23, 88.

GOODS OF THE SAME DESCRIPTIVE PROPERTIES. See Trade-Marks, 100,

101, 102, 104.

GOVERNMENT GUARANTY. See Labels and Prints, 1, 2; Trade-Marks, 3, 20, 82, 92.

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HEARING. See Brief; Public-Use Proceedings.

INCOMPLETE APPLICATIONS. See Affidavits under Rule 75, 2; Delay in

Filing Application.

IDENTIFICATION OF APPLICATION.

tions.

See Access to Abandoned Applica

IDENTITY OF INVENTION. See Interference, 14, 15; Reissues, 1, 2. INDEFINITENESS. See Motion to Dissolve Interference, 7, 15, 16, 17, 21, 22. INFRINGEMENT. See Suits for Infringement.

1. CONTRIBUTORY-SALE OF PARTS TO BE USED IN A PATENTED COMBINATION. The manufacture and sale of unpatented disk records for use in a talking-machine covered by the Berliner patent, No. 534, 543, in which the disk record is an essential element, constitutes contributory infringement of that patent. **Leeds & Catlin Company v. Victor Talking Machine Company and United States Gramophone Company, 549.

2. SAME REPAIR AND RECONSTRUCTION.-The scale of unpatented disk records for use in talking-machines made in accordance with the Berliner patent, No. 534,543, which covers the combination of the record and a reproducing-stylus shaped for engagement with the record and free to be vibrated and propelled by the same, does not come within the doctrine of permissible repair of the patented device, but amounts to reconstruction. The record is not perishable or subject to decay within the meaning of this doctrine, but is capable of remaining useful for an indefinite period, and the sale of such records was not for the purpose of replacing worn-out parts, but for the purpose of increasing the repertory of tunes. **Id.

INOPERATIVE DEVICES. See Abandonment of Applications, 8; Examination of Applications, 4; Motion to Dissolve Interference, 11; Testimony, 2, 3.

INTERFERENCE.

See Abandoned Applications; Abandoned Experiments; Abandonment of Applications; Abandonment of Invention; Access to Pending Applications; Affidavit Under Rule 75; Appeal to the Court of Appeals of the District of Columbia; Brief; Claims, 3, 4, 5; Concealment of Invention; Decisions of the Court of Appeals of the District of Columbia; Delay in filing Application; Diligence; Disclosure of Invention; Divisional Applications; Drawings, 1; First and Original Inventor; Interfering Patents; Invention, 1, 4; Joint Applicants; Mandamus; Motion to Amend Preliminary Statement; Motion to Dissolve Interference; Motion to Reopen Interference to Take Testimony; Preliminary Statements; Priority of Invention; Public Use Proceedings; Reduction to Practice; Rules of Practice of the United States

Patent Office; Specifications; Supervisory Authority of the Commissioner of Patents; Testimony; Trade-Marks, 2, 16, 17, 18, 36, 37, 47, 48, 55, 56, 57, 66, 77, 78, 79, 89, 90, 91.

1. EVIDENCE-WEIGHT AND SUFFICIENCY.-The testimony of a witness that he knew of the making and testing of a device corresponding to a certain blueprint and that the test was successful is of no value whatever where he did not attempt to describe the invention, did not indicate that he had any real knowledge of it, and did not state the facts upon which he based his conclusion that the test he witnessed was successful. *Schmidt v. Clark, 280.

2. SAME-PRESUMPTION-FAILURE TO CALL WITNESS.-The failure to call a witness to whom the inventor testifies he disclosed the invention or to account for his absence is a circumstance tending to discredit such testimony. *Id.

3. REDUCTION TO PRACTICE-DILIGENCE.-Where the evidence fails to show any activity on the part of S. from July, 1903, to December, 1906, when he filed his application, and in the meantime C. enters the field and gives the public the benefit of his discovery by manufacturing several hundred devices embodying the invention, in order to prevail S. must prove his case beyond a reasonable doubt. (Warner v. Smith, C. D., 1898, 517; 84 O. G., 311; 13 App. D. C., 111.) *Id.

4. CONCEPTION OF INVENTION-REDUCTION ΤΟ PRACTICE-DILIGENCE.-A would-be inventor frequently has a nebulous and general idea of a result which he wishes to accomplish and possibly a general idea of means to accomplish that result, but, being unable to give his ideas practical form, allows them to slumber. Upon learning that another has successfully worked out such ideas the mists of uncertainty are immediately dissipated, vagueness takes definite form, and the would-be inventor becomes in his own mind the actual inventor and acts accordingly. The danger and opportunity for fraud or mistake in such cases are so great that the proof should be very clear and very convincing to warrant an award to the dilatory party. *Id.

5. EVIDENCE-SUPPRESSION-TESTIMONY TAKEN OUT OF TIME AND NO OPPORTUNITY ALLOWED FOR CROSS-EXAMINATION.-Where a party to an interference begins the taking of his testimony just two days prior to the expiration of the time set and occupies all of such time in the direct examination and offers the opposing party no opportunity within such time for cross-examination and without securing extension of his time proceeds to examine other witnesses thereafter, at which examination the opposing party's counsel was not present, he having withdrawn after the expiration of the time set, Held that all the testimony was properly suppressed. Mattice v. Langworthy, 38.

6. DISSOLUTION-AFFIDAVIT FILED UNDER RULE 75 ALLEGED TO BE FALSE.An interference will not be dissolved upon the affidavit of a party thereto alleging that an affidavit of an opposing party filed under Rule 75 during the ex parte prosecution of the opposing party's application to avoid a reference was false or upon such an affidavit considered in connection with the testimony taken in the interference, which, it is alleged, tends to disprove the allegations made in such affidavit. The affidavit of the moving party which merely denies the allegations of the affidavit filed under Rule 75 is obviously insufficient evidence, and it is well settled that an interference will not be dissolved on grounds arising out of the testimony taken on the question of priority. Schuler v. Barnes v. Swartwout, 42.

7. PRIORTY.-The decision of the Commissioner of Patents awarding priority of invention of a process to G. reversed for the reasons given in the companion interference involving apparatus used in carrying out the process, which is decided herewith. *Mark v. Greenawalt, 309.

8. ISSUE-CONSTRUCTION.-Where the issue of an interference is in clear and unambiguous language and is capable of but one construction, the court will not read into it a limitation not expressed therein. *Geltz and Hosack v. Crozier, 313.

9. DISSOLUTION-LACK OF RIGHT TO MAKE CLAIMS NOT AN INFORMALITY.— A motion to dissolve alleging that some of the counts do not properly read on the patented structure of the moving party relates to the right of the patentee to make the claims and is not a question of informality in the declaration. Earll v. Love, 56. 10. SAME

FAILURE TO INCLUDE CLAIMS NOT PATENTABLE OVER ISSUE.-The failure of an Examiner to include in the interference issue claims not patentably different from the issue furnishes no reason for the dissolution thereof on the ground of informality in the declaration. Id. 11. APPLICATION AND PATENT-DECLARATION-PRACTICE.-When an interference is declared between an applicant and a patentee and the Examiner is of the opinion that the applicant has presented claims which do not differ materially from the issue of the interference, he should append to the declaration of the interference a statement that such claims, specifying them by number, will be held subject to the decision in the interference. If, in his opinion, there are no such claims, he should append to the declaration a statement to that effect. Id.

12. PRELIMINARY STATEMENT AMENDMENT-NEWLY-DISCOVERED EVIDENCEDILIGENCE.-On a motion to amend a preliminary statement to change the date of disclosure and of the making of drawings from a date subsequent to a date prior to the dates alleged by the opposing party, where it appears that the drawings which are alleged to constitute newly-discovered evidence were examined prior to the making of the preliminary statement, an averment that the element shown therein and which is involved in interference was an obscure part of the machine and that the illustration thereof was therefore overlooked does not constitute a sufficient excuse for failure to earlier discover such evidence. Goldberg v. Crumpton v. Carlin, 60. 13. MOTION UNDER RULE 109-DISCRETION OF THE EXAMINER OF INTERFERENCES.-Where the Examiner of Interferences refused to transmit a motion under Rule 109 unless the moving party filed within a fixed time a statement pointing out the parts or elements of his application covered by the elements of the claims submitted, Held that this is a question of procedure which is clearly within the jurisdiction of the Examiner of Interferences and should not be reviewed unless there is a clear abuse of discretion on his part. Hoch v. McCaskey v. Hopkins, 71.

14. PATENTEE-APPLICATION FOR REISSUE-RIGHT OF REISSUE APPLICANT TO MAKE CLAIM.-Where it appeared in an interference proceeding between a patent and an application for the reissue of a patent that the reissue applicant is not entitled to make the claim because it is not for the same invention intended to be secured in the original patent, the decision on priority was awarded in favor of the patentee. *Nelson v. Felsing and Felsing v. Nelson, 358.

15. PRIOR INTERFERENCE BETWEEN SAME PARTIES-RES ADJUDICATA-ALLEGED DURESS IN PRIOR PROCEEDING.-Where it appears that a claim involved in an interference proceeding between a patentee and an applicant for the reissue of a patent covers substantially the same invention as a claim of a prior interference between the same parties in which the patentee filed a concession of priority, the question of priority is res adjudicata, and evidence offered by the patentee that the concession was obtained from him by duress will not be considered. A judgment obtained by fraud or duress must be attacked in a direct proceeding and not collaterally. *Id.

16. REOPENING-NEWLY-DISCOVERED EVIDENCE-EXCUSE FOR DELAY.-Where counsel was of the opinion that certain testimony which it was proposed to take might be introduced in rebuttal and after the expiration of the time set for taking rebuttal testimony, upon a motion to extend such time, the Examiner of Interferences denied the motion, upon the ground that the testimony sought to be taken was not proper rebuttal, but was part of the case in chief, and thereupon a motion to reopen was filed for the purpose of taking such testimony as newly-discovered evidence, Held that the excuse for the delay was insufficient. Crescent Oil Company v. W. C. Robinson & Son Company, 86.

17. SAME-SAME EVIDENCE MUST BE SHOWN TO BE MATERIAL.-In order to warrant the grant of a motion to take newly-discovered evidence, it must appear that the proposed evidence is material. Id.

18. MOTIONS-PIECEMEAL PROSECUTION.-The piecemeal prosecution of motions places an unnecessary burden upon the Office and upon the parties, and the practice is strongly condemned. Id.

19. PRELIMINARY STATEMENT—ALLEGATIONS THEREOF MUST CONFORM TO THE RULES.-Rule 110 requires that the allegations of the preliminary statements should set forth inter alia the "date of the reduction to practice of the invention." This allegation of the reduction to practice should be alleged positively either in the terms of the rule or in such other language as will leave no question as to the actual reduction to practice of the invention. Williams v. Foyer and Kurz, 89. 20. PRIORITY-RIGHT TO MAKE CLAIM.-A disclosure in an application which is sufficiently specific to enable persons skilled in the art to readily construct and use the invention constitutes a compliance with section 4888, Revised Statutes, (Hopkins v. Newman, C. D., 1908, 395; 134 O. G., 2028; 30 App. D. C., 402;) but in an application for an automatic signaling system involving an inductive bond employed to bridge the rails a general reference to "transformers" does not entitle the applicant to amplify his description by adding thereto a description of a particular kind of transformer and make claims thereto, although such construction may have been old in the art when the application was originally filed. * Townsend v. Thullen, 381.

21. RIGHT TO MAKE THE CLAIMS-TESTIMONY UNDER RULE 130.-A motion to take testimony to establish that the opposing party has no right to make the claims corresponding to the issue was properly denied where it appears that the proposed testimony would be largely that of experts as to the meaning of the issue, (citing Pym v. Hadaway, C. D., 1907, 189; 129 O. G., 480.) Ricketts v. Ambruster and Beck, 109. 22. PRIORITY-EVIDENCE.-On an issue relating to a wire-drawing machine, including a rotary block having a vise pivoted thereon to engage the wire and a swinging die-holder, in which the drawing operation begins with the vise in a radial position on the block, evidence considered and

Held insufficient to show that the early device relied upon by S. as a reduction to practice was operated with the vise in a radial position prior to the date to which T. is entitled, and priority is therefore awarded to T. * Thompson v. Smith, 432.

23. PATENTABILITY OF THE ISSUE-JURISDICTION OF THE COURT OF APPEALS.— The question of the patentability of the issue of an interference is not a jurisdictional one, and the Court of Appeals of the District of Columbia will not review the action of the Patent Office holding the issue patentable, but will confine its consideration to the question of priority. *Johnson v. Mueser, 437.

24. PRIORITY.-Evidence considered and Held insufficient to establish a conception by J. prior to the date of filing of M.'s application. *Id. 25. PRACTICE-APPLICANT AND PATENTEE-CLAIMS UNDER REJECTION.

Where an applicant makes claims identical with those of a patent and the Examiner holds that when construed broadly enough to read upon the applicant's device the claims are unpatentable, Held that this is in effect a holding that applicant has no right to make the claims, and a request for interference was properly denied until the question of patentability of the claims to him had been settled. Ex parte Riddle, 138.

26. REBUTTAL TESTIMONY-ADMISSIBILITY.-Where the junior party included in his rebuttal testimony testimony which was in fact not in rebuttal of the case made by the senior party and urged its admission on the ground that the senior party had proved later dates than was expected by the junior party, thereby leading him to believe that a narrow construction of the issue was to be urged and that the testimony in question would show conception earlier than the date proved by the senior party, Held that the orderly rules of procedure relating to the introduction of evidence should be observed in the Patent Office, as elsewhere, and such testimony was properly refused consideration. * Woodbridge v. Winship, 448.

27. UNANIMOUS DECISIONS OF THE PATENT OFFICE.-Unanimity in the decisions of the Patent Office tribunals necessarily imposes upon the appellant the burden of making out a clear case of error in the decision appealed from. * Id.

28. APPEAL-COURT OF APPEALS OF THE DISTRICT OF COLUMBIA-CONSIDERATION OF QUESTIONS NOT RAISED BELOW.-Where a party fails to test before the proper tribunal in the Patent Office the propriety of the declaration of the interference or the opponent's right to make the claims of the issue, Held that these questions will not be reviewed on appeal. * McFarland v. Watson and Watson, 458.

29. EVIDENCE-FAILURE TO PRODUCE ORIGINAL DEVICE.-The failure of a party to an interference to produce the first device alleged to have been made by him embodying the invention Held to be immaterial where a later device made by him is produced which the testimony shows was a reproduction of the former. * Saunders v. Miller, 461.

30. PRIORITY-ORIGINALITY.-R. was a manufacturer of artificial limbs and a prolific inventor in that art. M. at the time he entered R.'s employ was not a mechanic nor skilled in the art, and though he claimed to have conceived the invention while in R.'s employ made no disclosure of it to any one, but within a month from the time he entered the employ of a rival manufacturer made a full-sized device. These facts, together with the fact that M. was admittedly familiar with the improvements gotten up by R., Held sufficient to show, as testified by R., that he disclosed the invention in issue to M. * Martin v. Rowley, 471.

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